027-SLLR-SLLR-1993-2-ABDUL-AZIZ-v.-USHA-INDUSTRIES-LTD.pdf
CA
Abdul Aziz vs. Usha Industries Ltd.
343
ABDUL AZIZ
v.USHA INDUSTRIES LTD.
A. NO. 597/79
C. COLOMBO 1537/SPLK. PALAKIDNAR, P. (CA) &
L H. G. WEERASEKERA J.
23 MARCH AND 02 APRIL 1993
Intellectual Property – Trade Mark – Right of local importer to register in hisown name in Sri Lanka, die foreign manufacturer's trade mark registered in aforeign country – Section 10 and 76 Trade Marks Ordinance.
Jay Engineering Works was a company incorporated in India and proprietor ofthe Trade Mark *USHA“. Since 1937 Jay Engineering Works manufactured sewingmachines and fans under Trade Mark "USHA” and imported them to variouscountries. From 1953 Jay Engineering Works commenced to export sewingmachines and fans bearing their Trade Mark *USHA* to Sri Lanka. The localimporters were first G. H. Reimoo and later Reimoo & Sons Ltd.. On 19-01-54 G. H. Reimoo registered himself in Sri Lanka as the proprietor of the TradeMark "USHA*. Jay Engineering Works had by telegram lodged opposition toReimoo's application to register the Trade Mark but not pursued it. In September1961 Usha Industries Ltd. was incorporated in Sri Lanka as a subsidiary of JayEngineering Works. Jay Engineering Works held 49% of the shares while Reimoo& Sons Ltd. held 26%. The new company was to manufacture sewing machinesand fans in Sri Lanka with technical assistance and collaboration of Jay Engi-neering Works who also supplied components. G. H. Reimoo and later Reimoo& Sons Ltd. continued to be the sole agents for the sale of sewing machinesand fans of the plaintiff company trade marked "USHA". The trade Mark “USHA”was registered in the plaintiff company's name on 18-01-63 with G. H. Reimoostating he had no objection and on 15-10-64 he assigned his rights to the plaintiffcompany. In September 1987 Reimoo & Sons Ltd referred the notice of renewalof their original Trade Mark to the plaintiff company who acknowledged receiptIn the meantime on 27-10-70 the Agency agreement between Reimoo & SonsLtd and the plaintiff Company was terminated.
Held :
The defendant-appellant was not an aggrieved person and was not entitled toregister the trade mark USHA by virtue of selection, or dealing or offering forsale.
When an importing agent has registered the mark of the manufacturer of thegoods imported – 1
1.the mark should represent the reputation of the importer and not of themanufacturer of the goods imported ;
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The importer must have the consent of the manufacturer to be the soleconsignee.
He cannot act in beach of his duties as agent of the manufacturer andhe should act honestly, faithfully and in good faith. An importer will beentitled to register by reason of selection of the goods or dealing offeringfor sale only where he has exercised skill and knowledge in the selection.
A customer must rely only on the genuineness and quality of the articleon the importer's testmony.
The application for rectification must be by a person aggrieved.
Appeal from the judgement of the District Judge of Colombo
H. L de Silva, P.C. with Varuna Basnayake, P.C. and A. S. Jayawardene fordefendant-appellant
K. N. Choksy, P.C. with Nihal Fernando for plaintiff respondent
Cur. adv. vult
May 31, 1993.
WEERASEKERA, J.
The plaintiff-respondent sued the defendant-appellant as executor ofthe estate of the late G. H. Reimoo as a person aggrieved, for adeclaration and or that the estate of the late G. H. Reimoo had noright or title to or in the Trade Mark "USHA" and for an order forrectification to the Register of Trade Marks by expunging Trade MarkNo. 15210 in that G. H. Reimoo had obtained his Registration15210 fraudulently or that it was held in trust for Jay EngineeringWorks. The plaintiff-respondent also prayed for an injunction restrain-ing the defendant from using the said Trade Mark. The defendant-appellant in his answer took up the position that Jay EngineeringWorks is the Registered Proprietor of the Trade Mark "USHA" in Indiawhile the Registered Proprietor of the Trade Mark in Sri Lanka wasG. H. Reimoo. The defendant-appellant also took up the position thathaving been the selling agents and distributors of the products ofUsha Industries Ltd. and earlier of Jay Engineering Works, G. H.Reimoo was entitled to Registration of the Trade Mark by reasonof selection, dealing with and offering for sale machines with the"USHA" mark and that on this basis G. H. Reimoo became theProprietor of the Trade Mark.
CA
Abdul Aziz vs. Usha Industries Ltd. (Weerasekera, J.)
345
The case went to trial on 18 issues.
The following facts were established by evidence and there are noserious disputes on them.
That Jay Engineering Works is a company incorporated inIndia and the Proprietor of the Trade Mark "USHA"
That since 1937 Jay Engineering Works manufactured sewingmachines and fans under the Trade Mark “USHA“ andexported them to various countries under the Trade Mark"USHA”
That from about 1953 Jay Engineering Works commenced toexport sewing machines and fans to Sri Lanka to which wasaffixed the "USHA” Trade Mark in India.
That the sale in Sri Lanka of these sewing machines and fanswere done at first by G. H. Reimoo the individual and laterby Reimoo & Sons Ltd. from 1953.
That on 19.1.54 by P1 G. H. Reimoo registered in Sri Lankaas the proprietor the Trade Mark "USHA" in respect of sewingmachines and fans No. 15210.
That by P2 on the application to Register being advertisedJay Engineering Works sent a telegram stating that oppositionto the Registration will be filed though not pursued.
That in September, 1961 the plaintiff company was incorpo-rated in Sri Lanka as a subsidiary of Jay Engineering Workswith Jay Engineering Works holding 49% of the shares andReimoo Sons Ltd. holding 26% of the shares to manufacturesewing machines and fans in Sri Lanka with the technicalassistance and collaboration of Jay Engineering Works andwith components imported from India by them.
G. H. Reimoo at first and thereafter Reimoo & Sons Ltd.continued to be the sole agents for the sale of sewing machinesand fans of the plaintiff-respondent with the trade Mark "USHA".
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(I) That at the incorporation of the plaintiff-appellant company anapplication was made to the Registrar of Trade Marks for theregistration of the trade mark "USHA" the plaintiff-appellant'sname and the registration in respect of fans 22819 wasallowed.
(j)By P25 dated 18.1.63 G. H. Reimoo informed the Registrarthat he had no objection to the registration being made inthe name of Jay Engineering Works.
(k)By P26 dated 15.10.64 he assigned his rights but without thegoodwill to plaintiff-appellant in regard to Trade Mark 15210.
By P29 dated in September, 67 Reimoo & sons Ltd, referredthe notice of renewal of Trade Mark 15210 to the plaintiff-appellant and by P39 the plaintiff-appellant acknowledgedreceipt.
(m)By P26 dated 27.10.70 the agency agreement P27 wasterminated and the lapsed application for registration No.15210 made on P12 No. 30707 in 20.9.1968 is pending thedetermination of this case.
The learned District Judge in a very careful, exhaustive andwell considered judgment has examined the evidence in regard tothe questions set out in A to N aforesaid with the evidence of thedocuments and that of witnesses Sha and Aziz and the Indian andSri Lanka authorities when he directed his mind to the issues beforehim and in particular to the question whether the defendant appellantwas an aggrieved person and as strongly urged before us by learnedPresident's Counsel for the appellant that by reason of Sections 10and 76 Trade Marks and the defendant-appellant was entitled toregister the Trade Mark "USHA" by virtue of selection, or dealing oroffering for sale on this aspect of the evidence and the law beforehe came to his conclusion with which I find no reason to disagree.The learned District Judge has had the benefit of the judgement ofTennakoon C. J. in Section 114/71 (F) – D. C. Colombo 66432/Mwhich he examined and for the purpose of concluding as he did.It would therefore suffice as Tennakoon C. J. did in Section114/71 (F) for the purpose of my opinion to quote from the judgmentof the learned District Judge.
CA
Abdul Aziz vs. Usha Industries Ltd. (Weerasekera, J.)
347
"In an application for rectification of the register some of theprinciples by which the Court should be guided may be set downas followsu.
“When an importing agent has registered the mark of themanufacturer of the goods imported firstly the mark shouldrepresent the reputation of the importer and not of the manu-facturer of the goods imported. Secondly, the importer must havethe consent of the manufacturer of the goods and be the soleconsignee. Thirdly, he cannot act in breach of his duties as theagent of the manufacturer. He should act honestly, faithfully andin good faith. An importer will be entitled to register by reasonof selection of the goods or dealing or offering for sale only wherehe has exercised skill and knowledge in the selection. Fourthly,a customer must relying only on the genuineness and qualityof the article on the importer's testimony as to the genuinenessand quality. Fifthly, the application for rectification must have beenmade by the person aggrieved". The above is a passage fromthe judgment in D. C. Colombo 66423/M which has been quotedverbetically by the Lordships in Supreme Court Judgment in thesame case S.C.114/71(F).
In the present case all that the defendant can do is to say thathe is entitled to the impugned Trade Mark because he introducedand popularized the name “USHA" in this country. Throughoutthe advertisements he claimed to be neither the manufactureror producer of the goods ; he has described himself merely assole agent. It is true that the defendant-appellant and his fatherwould have expended a considerable sums of money in adver-tising and finally have purchase transaction. This no doubt is thereason why his distribution rights are referred to in P25 and whyhe took steps in the agency agreements P27 and P28 co demarcatefor himself an agreed territory consisting of Western, Southern,North Western and Sabaragamuwa Provinces where he will havethe right to sell the products for a period of 5 years. This agency,can be terminated by either party giving 3 months notice in writingto the other. No where in these documents is there even asemblance of the claim to the proprietorship of the Trade Markitself. Indeed one finds it difficult to find an explanation fordocuments P25 and P26 other than on the basis that G. H.Relmoo was not claiming to be the proprietor to the Trade Mark
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but was merely claiming to be interested in the distributing of“USHA' products no doubt as sole agents of Jay Engineeringworks. In my view therefore the disputed 'USHA' mark does notrepresent reputation either. Further defendant – Appellant norhis father had the consent of the manufacture to register the'USHA' mark, nor were they sole consignees, though they werethe major consignees. No did the customers in Sri Lanka dependon G.H. Reimoo's or the defendants skill in the selection of thegoods or their testimony as to the genuineness of the goods.As such in my view the defendant cannot claim to be entitledto register the 'USHA' mark by virtue of selection, or dealing oroffering for sale:"
I fully endorse these reasons and the conclusions of the learnedDistrict Judge.
For these reasons the appeal of the defendant appellant isdismissed with costs.
PALAKIDNAR, J. – I agree,
appeal dismissed.